According to the Small Business Profile 2018 by the Ministry of Jobs, Trade, and Technology of BC, there has been an increase of 35,100 new small businesses in BC from 2014-2017.

With the rapid growth of co-working spaces across the province, it is evident that BC is a hotbed for startups and entrepreneurs.

What this also means is that intellectual property protection is becoming increasingly vital to the success of a business.

If your business is experiencing a scenario similar to any of the following, you should strongly consider securing your brand by filing a trademark.

1. Your Competitor has a Similar Business Name

Scenario: You recently discover that your business name sounds similar to another business in BC that offers similar products/services. 

If the competitor owns a registered trademark for their name, they will have exclusive rights to use that name across Canada with respect to a specific set of goods and services.

In such a case, you will be exposing yourself to a trademark infringement lawsuit if you continue to use the same name.

Even if the competitor does not own a registered trademark for their name, that mark may still be protected under common law if they have been operating for a period of time.

The competitor can assert a claim to the unregistered trademark if they can demonstrate in a court of law that:

1. their name has established a form of goodwill or reputation attached to the goods and/or services as perceived by the public;
2. the other party deceived the public through its misrepresentation; and
3. they have incurred damages due to the misrepresentation.

Recommended action: Create a more distinct name that will be easier to trademark.

2. You Are Planning to Operate Your Business as a Partnership

Scenario: You and your friend are entering business together as partners and want to co-own the business name.

You can both apply for joint ownership of a trademark, but there is always a level of risk if complications arise in the partnership.

Who controls the use of the trademark with respect to the quality of the products and/or services?

What happens if a partner decides that he wants out of the partnership?

Can one co-owner license the mark without the consent of the other co-owner?

Does filing for trademark infringement have to involve both co-owners?

The involved parties should put in place an agreement that clearly sets out their respective rights and obligations for each trademark.

Recommended action: Form a separate entity with the co-owners that allows the entity to hold the trademark(s) and exercise its rights on behalf of the co-owners.

3. You Are Launching a New Product or Service

Scenario: You are preparing to launch a new line of headwear for your clothing store.

Many businesses often create distinct names for their products and/or services because they add another dimension to their overall brand.

Registering additional trademarks for your new headwear sub-brand provides an extra layer of protection against competitors attempting to imitate your products and/or services, as well as deter counterfeiters.

For example, the Hudson’s Bay Company is the owner of over 500 registered trademarks in Canada. Several popular sub-brand products that are currently pending or registered as trademarks include:

• HBC Stripes (Point blankets, clothing, home products)
• Bundle of Joy (Kids clothing and toys)
• Expression (Ladies footwear)
• Distinctly Home (Home decor and furnishings)

Recommended action: Trademark your brands and grow the value of your intellectual property assets.

4. Your Business is Growing

Scenario: Your company is starting to take off. Brand awareness,  reputation, and revenue has increased.

As your business grows, so does the value of your brand.

It’s understandable that many startups and entrepreneurs put trademarks on the back burner because capital may be limited early on and the primary focus is generating revenue.

Once your business is making money, registering trademarks becomes even more vital to the growth of your business for two important reasons:

1. They become assets that you can sell or license to help with business expansion; and
2. They keep competitors from piggy-backing off the name(s) that you’re building.

Recommended action: Hire a trademark lawyer to conduct a thorough audit of your intellectual property to determine which assets should be registered as trademarks.

5. You Are Looking to Expand Into International Markets

Scenario: You run a successful business in Canada and plan on operating your business in other countries.

This is pretty clear-cut: registering your trademark in Canada only protects your intellectual property rights in Canada.

Trademark applications will need to be filed separately to whichever countries you plan to expand your business.

On June 17th, 2019, Canada joined the Madrid Protocol which allows applicants (who have pending or registered Canadian trademarks) to more easily file trademark applications in multiple jurisdictions.

Recommended action: Contact your trademark lawyer and discuss whether it is better for you to file multiple trademark applications via the Madrid Protocol, or if it is better to file separate trademark applications in each jurisdiction.

Lesson: Never Delay Protecting Your Brand

No matter the stage of your business, you should carefully consult with experienced legal counsel to protect your intellectual property assets.

If you’re not diligently protecting your intellectual property, you may be jeopardizing your brand.

Do you have a unique trademark scenario you’d like to discuss?

Speak to our IP lawyers directly at Patrola Law: (778) 565-4700

The preceding content is informational only and does not constitute legal or professional advice. To obtain such advice, please contact our offices directly.